The Trademark Owner’s Dilemma - Vigorous Enforcement of Rights or Bullying by Thomas E. Kenney

by Thomas E. Kenney

U.S. trademark law is deeply rooted in Common law, but even after Congress enacted federal law prescribing trademark rights in 1870, those rights have been repeatedly tested and redefined. But trademark protection is a door that swings both ways, writes Pierce & Mandell attorney Thomas Kenney  in a recent article which appeared in the July 2015 edition of Massachusetts Lawyers Journal.  “The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”“The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”

“A trademark owner not only enjoys the exclusive right to use its marks in commerce, but also has the right (and in fact the obligation) to stop others from using similar marks in a manner that causes consumer confusion,” Kenney writes. “However, a trademark owner is not permitted to misuse its trademark rights so as to intimidate another business into abandoning a mark that does not conflict with the trademark owner’s mark.  As a result of these competing principles of trademark law — a trademark owner is obligated to vigorously enforce its rights but at the same time must respect the fact that those rights are limited and not monopolistic — a trademark owner frequently is left in a quandary. What measure of enforcement is sufficient to protect its rights without crossing the line? Adding to that tension is the developing concept of ‘trademark bullying.’”

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